Ford fails to obtain recognition of 'blue oval' mark as famous
The law on famous trademarks is unequivocal: a trademark may be recognised as famous if it has become widely known as a result of intensive use, on the date of filing of the application, among the relevant consumers of the applicant's goods. There are special rules which regulate the procedure for the recognition of a trademark as famous.
Ford Motor Company initiated a procedure for the recognition of the mark depicted below as famous, claiming that it had been famous since 2007 and submitting various documents to support its claims. Among them, there was information on 122 production units in Russia and the number of cars sold on the Russian market (almost 35,000 in 2008).
After examining the case, the panel of examiners refused to grant 'famous status' to the trademark.
At first glance, the decision of the Patent Office may seem surprising: Ford cars are cruising the streets of many Russian cities. One may even wonder whether some of the examiners drove Ford cars to take part in the hearing.
However, analysis of the decision shows that some of the documents needed to prove the famous status of the mark were not duly prepared:
- Some advertisements could not be associated with the car manufacturer;
- Historical and information documents did not originate from Ford Motor Company, but from associated company Ford Sollers Holding;
- Booklets on the cars did not contain circulation numbers;
- Diplomas and certificates were dated from 2008, while it was claimed that the mark had been famous since 2007; and
- Not a single document showed the actual production and supplies of goods bearing the mark.
The procedure lasted two years. The applicant was asked twice to provide explanations about the documents that it had submitted, but nothing was presented.
As part of the evidence provided were the results of a public poll. The panel recognised that the designation used to label the cars was indeed highly recognisable and was known to the majority of consumers. The results of the public poll, however, were only one of the items of evidence needed to obtain the status of famous mark, and only complemented other pieces of evidence. In addition, circumstantial information from the file showed that the mark had been used in the past in different (sometimes very different) versions, which were quite distinct from the 'blue oval' mark. However, the applicant sought recognition only for its 'blue oval' mark.
The Patent Office thus refused to recognise the trademark as famous.
It is clear that the rules governing the recognition of a trademark as famous are strict and numerous, and that they are intended to screen out the marks which do not deserve recognition. Nevertheless, it is regrettable that Ford's mark was not recognised as famous, especially as the public poll showed extraordinary awareness: almost 100% of the respondents knew the trademark well. Unfortunately, this was the only valid argument in favour of recognition, and other pieces of evidence were not of equal standard, which was acknowledged by the Patent Office.
The decision of the Patent Office was appealed to the IP Court, which confirmed the findings of the office. It stated that the applicant had sought only to prove the alleged bias of the Patent Office, and had not submitted any substantial evidence to prove the famous character of its trademark. Again, this outcome is regrettable, but the Patent Office and the IP Court can hardly be said to have been unjust in this case.
Vladimir Biriulin, Gorodissky & Partners, Moscow
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